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Paice LLC, a small Florida-based hybrid car technology company that won a patent infringement case against Toyota in 2005, has now brought a related case to the International Trade Commission, which has the power to ban all Toyota hybrids from the United States. What’s at stake for Toyota if its hybrids were banned from the US?

“It doesn’t matter that Toyota might eventually have that decision overturned…Toyota would lose millions of dollars,” Michael Murphy, a N.C.-based intellectual property lawyer and former electrical engineer, told HybridCars.com. Murphy has a deep understanding of both patent law and hybrid electrical systems.

The case won’t be decided for another year and a half, but even the slight prospect of losing the case represents another pothole for Toyota, just one year after overtaking General Motors as the world’s largest car company. In recent months, the Japanese company reported its first corporate losses (to the tune of billions), a growing problem with quality, its biggest recall in history, and the decision to close its first factory in the United States.

Murphy explained that Paice’s intellectual property holdings consist primarily of patents originated by inventor Dr. Alex Severinsky, a Russian immigrant who is an electrical engineer by training. Severinsky began work on hybrid drivetrain concepts, by his statements, as early as the 1980s. When the US district court in Marshall, Tex.—well-known as a favorable environment for patent holders—ruled that Toyota did indeed infringe upon Paice’s hybrid patent, the court forced the company to pay a “compulsory license” to Paice of about $100 per hybrid car.

HybridCars.com spoke with Murphy to learn more about the twists and turns in the story of Toyota’s hybrid patent saga.

Court Definition of Terms

HybridCars.com: What specifically is the innovation that Paice owns?

Michael Murphy: At its heart, it’s the cooperative dual management of the internal combustion and the electric motor. Either one is a candidate at any time for providing some of the torque or all of the torque needed to spin the drive wheels. What Paice says is its real innovation is in the fusing of the two, the seamless management of torque from either or both drive inputs.

It sounds like Paice made claim to the special sauce that makes a hybrid what it is—the key ability to switch back and forth from electric to internal combustion.

If all you were doing was switching from an electric mode to a gas mode, you wouldn’t have infringement. In other words, you wouldn’t have infringement if you made a crude hybrid system that said we’re either running on batteries or we’re running on the gas engine, but never both.

Michael Murphy

The real point of [Paice’s claimed] sophistication is where you get torque. It may be, under certain conditions, it’s more efficient to get torque from the electric motor. Under other conditions, it’s more efficient to get that from the gas engine. And under other conditions, you want to seamlessly blend torque from both sources.

So, it’s in the reading of what’s required based on the needs of the driver and other conditions, and the delivery of torque to satisfy that requirement.

Paice would probably describe it a little different. They say their microprocessor-based controller looks at engine speed, motor speed, battery voltage, battery charge, ambient temperature, acceleration, direction, deceleration—all of those things—to make a decision about how much of the torque should be supplied by the engine versus the electric motor. That’s the heart of it. If it was an either-or system, Toyota wouldn’t be in court. Also, it wouldn’t be a very efficient hybrid system.

Injunction, Fee or Exclusion

Does the ruling in Paice’s favor hold true for all of Toyota’s future hybrid models?

That’s exactly what the International Trade Commission proceeding hinges on.

But first, you have to go back to the first case in the eastern district of Texas, where it was found that the hybrid drivetrain in the Prius II, the then existing Toyota Highlander Hybrid, and the Lexus RX 400h all infringed claims 11 and 39 of U.S. Patent No. 5,343,970.

What Paice wanted out of that first lawsuit was a permanent injunction, banning Toyota from selling or importing these infringing drivetrains. The injunction would have given Paice strong leverage to negotiate a lucrative licensing deal with Toyota. Paice didn’t get the injunction, because the court had to balance the harm—the cost to the patent owner—versus the interests of the public and whether money damages are going to be adequate remedies. The district court denied Paice’s motion for a permanent injunction. Instead, they said Toyota has to pay license fees. That’s called a compulsory license.

Now, several years down the road, here comes Toyota with new vehicles, the Prius III, the new Lexus HS 250h, that were not part of the original court settlement, and they’re coming into the country.

Paice is saying to Toyota, you don’t have a license for the new vehicles, but you need to get one.

They don’t want to give Toyota a license. Paice never wanted to grant a license to Toyota, at least not under the court terms. Paice always felt that their technology was worth a lot more than that to Toyota. And by the court denying the permanent injunction, Paice lost a huge point of leverage against Toyota. Toyota is allowed to build and sell these vehicles. And all Toyota has to do is pay the licensing fee.

So as new vehicles are coming to the market, Paice is viewing it as their opportunity to open up a new case and get better terms.

Paice didn’t get the decision they wanted in the first case. Now, there’s a second lawsuit, also filed in Texas, by Paice against Toyota. And it is alleging infringement of these new vehicles—the third-generation Prius, the Camry Hybrid, the Lexus HS 250h, and the Lexus RX 450h.

Paice sees these new vehicles as new acts of infringement. So they see an opportunity to go to the International Trade Commission and have the ITC do its own infringement hearings as essentially a parallel process to the ongoing court proceedings. But what the ITC can do—and what would be a huge setback for Toyota—the ITC can exclude or stop importation of these new vehicles if they determine that they are infringing Paice’s patent.

Low Chance of a Ban

Has the ITC decided the issue?

Paice just submitted their complaint to the ITC in the last month.

Is there any chance that Toyota hybrids will get banned?

If you ask the question like that, the answer has to be yes. Is there ANY chance? Is there a strong chance? No.

But banning those hybrids is not good for Paice…

That’s not right. Paice wants them banned—and really the term here is excluded. As soon as Paice wins an exclusion order from the ITC, Toyota’s in trouble. It doesn’t matter that Toyota can appeal that decision. And it doesn’t matter that Toyota might eventually have that decision overturned. For some indeterminate period of time, perhaps months, Toyota is stuck without any ability to bring these new vehicles into the United States and sell them. Think of the cost. Toyota would lose millions of dollars.

I can’t imagine Toyota letting that happen.

If it does happen, Toyota will run to Paice and negotiate a license. And it won’t be on favorable terms to Toyota. So Paice does want the exclusion order, because that will be Paice’s point of leverage to secure a much more lucrative licensing agreement with Toyota than it got out of the 2005 court proceedings.

Applying Pressure Through International Trade Commission

Do you know when the ITC case will be decided?

It may take about 15 months or so, but it could be sooner. The ITC will likely rule more quickly than the district court. And that’s the whole point of the strategy. If you can get an ITC ruling favorable to you, the patent owner, you just ratcheted up the pressure enormously.

Does the ITC subscribe to the same set of laws that were used in the previous case decided in Paice’s favor over Toyota?

Yes, subject to a few exceptions that probably are not important to this ITC proceeding. More importantly, Paice will say they got a fully adjudicated final decision by the district court in 2005 that Toyota infringed two patent claims. They will say, “We are in a related second court proceeding where the admissions made by Toyota of record include that the drivetrains in these new vehicles are not materially different that were at issue in the 2005 court case. Therefore, Toyota has effectively admitted that its new cars infringe the same two patent claims.”

Paice is turning to the ITC and saying, you guys don’t have to do anything except look at the record. Infringement is there. Stop importation of these new models which are not covered by the compulsory license ordered in the 2005 infringement decision.

In principle, is the prior ruling of infringement one that would hold weight at the ITC?

Absolutely.

So, it’s not looking good for Toyota?

That’s probably a fair assessment, but keep in mind that I’m talking about Paice’s characterization that Toyota has made those admissions. I don’t know that Toyota has actually made those admissions or conceded that point.

Secondarily, you also have to look at how the ITC works. When the ITC grants these exclusion orders, it does a similar balancing act as the court would do when it’s granting an injunction. It will look at the effective exclusion on the public health and welfare, and the competitive conditions in the US economy, and the production of like or directly competitive articles in the US. It’s not a light switch. You don’t just flip it on and off.

So even if the ITC buys into Paice’s arguments, there’s still no guarantee the ITC will grant an exclusion order. They might look at the same thing the district court did. For example, Paice doesn’t sell hybrid drivetrains. Instead, Paice’s focus is on licensing their hybrid drivetrain technology. In some sense, one might argue that Paice essentially is a licensing company. Here, I think Paice’s arguments are not very strong.

And that’s a mitigating factor for the ITC? That Paice did come up with an innovation, but they don’t make or sell hybrid cars.

That’s right. If the ITC is considering the effect of exclusion on public health and welfare, and you have what might be regarded as a licensing company that doesn’t make the infringing product, and there’s no other party in the United States that’s been identified as providing a substitute product or an alternative to it, and these hybrid vehicles are perceive as being desirable, they’re selling well, there’s growing interest in them in terms of economy and reduced pollution, well how do you balance that out? Maybe it’s better to let the importation continue.

Could the ITC enforce a certain level of royalty like the district court did?

No. The remedy from the ITC is limited to exclusion.

Harm and Fairness

But the ITC could just let it fall back to the court, and say Paice is already getting their royalties. For the future vehicles, there’s a decent likelihood that they’ll get similar royalties. And let it stand there.

That could happen. The district court in Texas said back in 2005 to Paice: “You were seeking a license from Toyota on this technology, which demonstrates that money damages are an adequate remedy here. Here’s your license.” And it could be in the second proceeding [regarding Toyota’s more recent crop of hybrids] that the district court turns around and does what it did in 2005. Here are compulsory licenses on these new vehicles. The real point here is, unless and until Paice can prevent Toyota from bringing those vehicles into the country, they don’t have as strong a position for licensing the technology as they want. If they can get the ITC to put a ban in place, then all the sudden the balance of negotiating strength goes to Paice.

It sounds like Paice is willing to spend the money to bring it to the ITC because it could give them a chance at stronger leverage, but they’re probably aware that it’s a long shot. They also probably feel wronged, and sense a lot of money at stake, and they’ll do what they can to bring the case as far as they can.

I don’t doubt that Paice believes it has a strong case for exclusion. If you read the complaint with a friendly eye toward Paice, it sounds like they’ve made a pretty good argument for exclusion. On the other hand, if you view Paice primarily as a licensing company, you have to wonder if they’re really suffering irreparable harm, or some kind of fundamental unfairness, if they’re not granted an injunction.

So you have a manufacturer out there making leading edge hybrid car products that everyone wants. Consumers are clamoring for it. Apparently, hybrid cars have benefits for the environment, reduced pollution, higher fuel efficiency, all of that great stuff. Then you have a company saying we don’t actually make any product, but we don’t want anybody else to be able to make it either, unless they pay a potentially high license fee to us. A lot of people who want Toyota’s hybrid cars are going to say that’s not fair.

On the other hand, you have the whole world of patent owners who say, “What is my patent worth if the only thing it gets me is a ticket for some court to impose a compulsory license at a royalty I wasn’t free to negotiate? Shouldn’t I be able to go out and negotiate that in the free market?” These are the top-level philosophical issues.

Analysts from IDTechEx have predicted that Automotive Thermoelectric Generators (ATEG), known as thermoelectric

Jose Freire

U.S. Patent system is a cancer. It has is usefulness but can easily be abused, like this case and 99% of software patents.

You shouldn’t be allowed to patent an idea that others can have and then claim you had the idea first, so pay me!

You should only be allowed to patent things like pharmaceutical drugs, that took 1 million man/hours to make and are easily reversed engineered.

It’s innovation terrorism.

Skeptic

More “Imaginary Property” BS. Hope they lose.

Did this company even do the work to come up with this idea or is this just one of those patent trolling companies that owns the patent solely for the purpose of going after alleged infringers?

That they filed in the East Texas courts is telling – they are known for supporting this type of BS.

Charles

East Texas needs to be flushed. If I come up with a non-obvious idea, I should be paid for it. The idea of combining the torque from two or more sources is not non-obvious (the double negative seems appropriate here). How you do it is not obvious to this patent holding computer programmer, but maybe to a person skilled in the art.

One more thing, just because it has not been patented or described in the literature does not mean that it is not obvious.

Michael W.

What about Ford or GM? From my reading of this patent, it appears that anyone who makes any kind of hybrid vehicle would be infringing on it.

simon@syd

Yep, any non-crude hybrid would be subject to this patent.

EricLK

From the description, the patent applies specifically to parallel hybrid. Toyota’s Synergy Drive combines parallel + series hybrid. On the other hand, GM’s Volt is a series hybrid only and so is not concerned by this patent dispute.

biomed

If you look through patents I think most of them are for general ideas, for example, I work on medical diagnostics, and someone had patented the idea behind any machine that takes at least one diagnostic and tests whether at least one treatment will not work. I don’t agree with these patents the same way I don’t agree with concept designers. Thinking up ideas is important, but it doesn’t mean jack if you don’t actually demonstrate the idea and make something useful for it. If Paice did in fact design a chip that decides how much gas and how much electric, then they should have a patent for it, but Toyota should also be free to use their own chip that is different and do similar things. Now if only we could stop the patents on crop seeds…

Erik

I fear the patent system in the US is going to hamper our innovation and future as a country. The idea of a patent is to reward someone for an innovation. I agree people should be rewarded for innovation, but China and other countries don’t give a crap about patents. So China can steal this idea and if nothing else make and sell a bunch to its internal market. Who loses? The innovator. The US as a whole loses when we grant patents and people hold development hostage with their patent(s).

If we as a country want to have a future, we need to grant patents only on worthy innovations. The courts can be a reasonable place to answer questions like this patent infringement case. So what’s the International Trade Commission doing to help the world and its people? If it imposes an ban/exclusion on Toyota vehicles we as a nation should rightfully and morally tell them to shove it up their #$$. We as a nation need to reduce our energy usage, and hybrids are a necessary step in that direction. As for international B.S. organizations and globalization as a whole, that can be a topic for another article.

Brian B

The patent and copyright laws exist to benefit society. If someone has an idea for a machine or process he or she can acquire a patent so that the inventor will bring that machine or process to market. Patent law protects the inventor for a specific time period. If these protections weren’t in place then inventors would be less likely to develop new machines and processes because someone else could come in after the initial inventor has spent considerable time, effort and money to produce the item or process and would have a much harder time recouping those investments.

Patent law isn’t perfect, but it is wrong to state that the U.S. patent law is a mess.

J.R.S.

“If someone has an idea for a machine or process he or she can acquire a patent so that the inventor will bring that machine or process to market.”
There’s the problem. These suing Toyota have no intention of bringing that machine or process to market in my opinion.

JCD

I tend to agree with J.R.S.!

If they can or could bring it to market? And if they had plants building and producing actual goods and or services in this country! Which they don’t!

All they are trying to do is search for deep pockets! Sort of sounds like some form of industrial espionage to me! This is at best an attempt at a high tech type mugging.

Part of the American problem is we don’t know how to support efficiency! In-effeciency and corruption and waste and immorality is the rule these days!

scratch00

Attn Tree Huggers: I like trees too. I say God bless you for trying to save the planet. But i can’t understand how you think that importing vehicles from Japan to come all the way across the pacific ocean in a Cargo ship is going to save the planet. Your prius will never save that much gas. A recent study in the UK shows that just 15 of the worlds largest cargo ships make more pollution than all 760 million cars on the planet. Their are 87000 of these kinds of ships in use today. To find this article go to http://www.guardian.co.uk/environment/2009/apr/09/shipping-pollution

Eng

Hi guys, I learned a lot from your comments. At this moment, saving the Earth is more important than anything else. So why let Paice spoil the good did. There is a simple solution to address the environmental issue of transporting Prius from Japan to US on cargo ship – let Toyota build Prius in US for US market and export them to neighborhood country as well. Let Toyota continue to pay Paice the same loyalty fee as long as the car is made in US. It not only solve the environmental problem, it lower the US unemployment rate as well. It boost US economy and strengthen USD. Paice gets its share, Toyota get its share and everybody helps to save the environment with green-tech car, our mother Earth will be happier too. It is a win-win-win solution.

nm

“A recent study in the UK shows that just 15 of the worlds largest cargo ships make more pollution than all 760 million cars on the planet…” You should note that the pollution the article referring to is SOx, which is one constituent of pollutant of many in the exhaust emission ships and vehicles emit.
The culprit is that low-grade ship bunker fuel (or fuel oil) has up to 2,000 times the sulphur content of diesel fuel used in US and European automobiles. Also note that it’s oversimplification to assume that every vehicle on this planet in upto the latest US or European emission standard. Even in the US or the Europe, I’m sure that there’re many ‘old’ vehicles that emit higher level of pollution than that allowed under the latest standard.
It’s important to exercise the organ that resides between our ears to think as we read, whether it’s on the print or on the internet.

Holly

Seems most of you have missed the simplest point.

If Toyota wants to use what he rightly patented, they shold simply pay.

It happens every day, in thousands of industries, gives individuals an incentive to “try” to invent something, and I guarantee you Toyota understands… and pays TODAY for many other patents. This is just one more patent to be added to the cost of doing business.

Erik

You also miss the point Holly, how much will that cost of business reach if they keep havin to pay others to use there patents? People wise up, and raise there prices of business, and then again, price of business goes up!

Ali.Moshizy

name of God

Date: 25/09/2011
Dear manager: ……………………………………..
Respectfully,
I, Ali Moshizy, was born in 1969 in Kerman, Iran, and now I am the manger and teacher of a Techno and Vocational School (in the field of injector systems of petrol – fueled four strokes cars) and my major is Computer Hardware.
Although, I do not know who is (from which nationality and religion) reading my letter, but one feature which is so important for me is our honesty and frankness in this speech.
I invented some designs that four of them are presented at the below and I want to sell them. It is necessary to mention that I have interest in teaching and scientific and practical researches but for doing them, I require some money and I should solve my financial problems, so I have decided to sell them to you.
I think that each of these systems is worth several thousands dollar but, due to short time, I’ve decided to sell them about 200,000 $ and now these designs and systems are as the following:
– Four stroke motor with work system 1/8 in which there is not valve and spring. This motor will be cool by water flow (about five times) and about 30 or 40 percent was added to the general efficiency of cars.
– A system which is able to change motor’s heat to coldness and directs it into its cabin; in the other words, this type of cooler does not receive its energy from crankshaft. So, at the time of work, not only it does not impose pressure on it, but also it helps to work better.
– In the design or system, we can find the wasted energies in the cars and use them, for example, we can use the vibrations of car’s chassis springs and provide the energy of car’s generator.
– A system which decreases the fuel of cars and increase the efficiency of cars in the two and four strokes cars. This system is cost effective with less volume.
I recommend you to enter into a contract with me, and with this less money, you will obtain high or lots of profits. Meanwhile, I invite you to come to my city and my office for concluding a contract.
I think that I can be an effective person for you. Please, declare your positive or negative answer as soon as possible; if your answer is positive, it will be happy for me, but if it is not, I will contact the other centers in the world.
Thanks for your prompt attention to this issue.
Respectfully,
Ali Moshizy

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